35 U.S. Code § 102 - Conditions for patentability; novelty

(a) Novelty; Prior Art.— A person shall be entitled to a patent unless—

(1)the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

(2)the claimed invention was described in a patent issued under section
151, or in an application for patent published or deemed published under section
122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

(b) Exceptions.—

(1) Disclosures made 1 year or less before the effective filing date of the claimed invention.— A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—

(A)the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(B)the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

(2) Disclosures appearing in applications and patents.— A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—

(A)the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;

(B)the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(C)the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.

(c) Common Ownership Under Joint Research Agreements.— Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if—

(1)the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;

(2)the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and

(3)the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

(d) Patents and Published Applications Effective as Prior Art.— For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application—

(1)if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or

(2)if the patent or application for patent is entitled to claim a right of priority under section
119,
365(a), or
365(b), or to claim the benefit of an earlier filing date under section
120,
121, or
365(c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.

Pub. L. 112–211, title I, §§ 102(2),
103,Dec. 18, 2012, 126 Stat. 1531, 1532, provided that, effective on the later of the date that is 1 year after Dec. 18, 2012, or the date that the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs enters into force with respect to the United States, and applicable only to certain applications filed on and after that effective date and patents issuing thereon, with certain exceptions, subsection (d)(2) of this section is amended by substituting “to claim a right of priority under section
119,
365(a),
365(b),
386(a), or
386(b), or to claim the benefit of an earlier filing date under section
120,
121,
365(c), or
386(c)” for “to claim a right of priority under section
119,
365(a), or
365(b), or to claim the benefit of an earlier filing date under section
120,
121, or
365(c)”. See 2012 Amendment note below.

No change is made in these paragraphs other than that due to division into lettered paragraphs. The interpretation by the courts of paragraph (a) as being more restricted than the actual language would suggest (for example, “known” has been held to mean “publicly known”) is recognized but no change in the language is made at this time. Paragraph (a) together with section
104 contains the substance of Title 35, U.S.C., 1946 ed., § 72 (R.S. 4923).

The section has been changed so that the prior foreign patent is not a bar unless it was granted before the filing of the application in the United States.

Paragraph (e) is new and enacts the rule of Milburn v. Davis-Bournonville, 270 U.S. 390, by reason of which a United States patent disclosing an invention dates from the date of filing the application for the purpose of anticipating a subsequent inventor.

Paragraph (f) indicates the necessity for the inventor as the party applying for patent. Subsequent sections permit certain persons to apply in place of the inventor under special circumstances.

Language relating specifically to designs is omitted for inclusion in subsequent sections.

Amendments

2012—Subsec. (d)(2). Pub. L. 112–211substituted “to claim a right of priority under section
119,
365(a),
365(b),
386(a), or
386(b), or to claim the benefit of an earlier filing date under section
120,
121,
365(c), or
386(c)” for “to claim a right of priority under section
119,
365(a), or
365(b), or to claim the benefit of an earlier filing date under section
120,
121, or
365(c)”.

2011—Pub. L. 112–29amended section generally. Prior to amendment, section related to conditions for patentability; novelty and loss of right to patent.

“(1) an application for patent, published under section
122(b), by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section
351(a) shall have the effect under this subsection of a national application published under section
122(b) only if the international application designating the United States was published under Article 21(2)(a) of such treaty in the English language; or

“(2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that a patent shall not be deemed filed in the United States for the purposes of this subsection based on the filing of an international application filed under the treaty defined in section
351(a); or”.

1999—Subsec. (e). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4505], as amended by Pub. L. 107–273, amended subsec. (e) generally. Prior to amendment, subsec. (e) read as follows: “the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section
371(c) of this title before the invention thereof by the applicant for patent, or”.

Subsec. (g). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4806], amended subsec. (g) generally. Prior to amendment, subsec. (g) read as follows: “before the applicant’s invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it. In determining priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.”

1975—Par. (e). Pub. L. 94–131inserted provision for nonentitlement to a patent where the invention was described in a patent granted on an international application by another who has fulfilled the requirements of pars. (1), (2), and (4) of section
371(c) of this title before the invention thereof by the applicant for patent.

1972—Subsec. (d). Pub. L. 92–358inserted reference to inventions that were the subject of an inventors’ certificate.

Effective Date of 2012 Amendment

Amendment by Pub. L. 112–211effective on the later of the date that is 1 year after Dec. 18, 2012, or the date that the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs enters into force with respect to the United States, and applicable only to certain applications filed on and after that effective date and patents issuing thereon, with certain exceptions, see section 103 ofPub. L. 112–211, set out as a note under section
100 of this title.

Effective Date of 2011 Amendment

Amendment by Pub. L. 112–29effective upon the expiration of the 18-month period beginning on Sept. 16, 2011, and applicable to certain applications for patent and any patents issuing thereon, see section 3(n) ofPub. L. 112–29, set out as an Effective Date of 2011 Amendment; Savings Provisions note under section
100 of this title.

Effective Date of 1999 Amendment

Amendment by section
1000(a)(9) [title IV, § 4505] of Pub. L. 106–113effective Nov. 29, 2000 and applicable to all patents and all applications for patents pending on or filed after Nov. 29, 2000, see section
1000(a)(9) [title IV, § 4508] of Pub. L. 106–113, as amended, set out as a note under section
10 of this title.

Effective Date of 1975 Amendment

Amendment by Pub. L. 94–131effective Jan. 24, 1978, and applicable on and after that date to patent applications filed in the United States and to international applications, where applicable, see section 11 ofPub. L. 94–131, set out as an Effective Date note under section
351 of this title.

Effective Date of 1972 Amendment

Pub. L. 92–358, § 3(b),July 28, 1972, 86 Stat. 502, provided that: “Section 2 of this Act [amending this section] shall take effect six months from the date when Articles 1 to 12 of the Paris Convention of March 20, 1883, for the Protection of Industrial Property, as revised at Stockholm, July 14, 1967, come into force with respect to the United States [Aug. 25, 1973] and shall apply to applications thereafter filed in the United States.”

Savings Provisions

Provisions of former subsec. (g) of this section, as in effect on the day before the expiration of the 18-month period beginning on Sept. 16, 2011, apply to each claim of certain applications for patent, and certain patents issued thereon, for which the amendments made by section 3 ofPub. L. 112–29also apply, see section 3(n)(2) ofPub. L. 112–29, set out as an Effective Date of 2011 Amendment; Savings Provisions note under section
100 of this title.

Continuity of Intent Under the CREATE Act

Pub. L. 112–29, § 3(b)(2),Sept. 16, 2011, 125 Stat. 287, provided that: “The enactment of section
102(c) of title
35, United States Code, under paragraph (1) of this subsection is done with the same intent to promote joint research activities that was expressed, including in the legislative history, through the enactment of the Cooperative Research and Technology Enhancement Act of 2004 (Public Law 108–453; the ‘CREATE Act’) [see Short Title of 2004 Amendment note set out under section
1 of this title], the amendments of which are stricken by subsection (c) of this section [amending section
103 of this title]. The United States Patent and Trademark Office shall administer section
102(c) of title
35, United States Code, in a manner consistent with the legislative history of the CREATE Act that was relevant to its administration by the United States Patent and Trademark Office.”

“(a) In General.—For purposes of evaluating an invention under section
102 or
103 of title
35, United States Code, any strategy for reducing, avoiding, or deferring tax liability, whether known or unknown at the time of the invention or application for patent, shall be deemed insufficient to differentiate a claimed invention from the prior art.

“(b) Definition.—For purposes of this section, the term ‘tax liability’ refers to any liability for a tax under any Federal, State, or local law, or the law of any foreign jurisdiction, including any statute, rule, regulation, or ordinance that levies, imposes, or assesses such tax liability.

“(c) Exclusions.—This section does not apply to that part of an invention that—

“(1) is a method, apparatus, technology, computer program product, or system, that is used solely for preparing a tax or information return or other tax filing, including one that records, transmits, transfers, or organizes data related to such filing; or

“(2) is a method, apparatus, technology, computer program product, or system used solely for financial management, to the extent that it is severable from any tax strategy or does not limit the use of any tax strategy by any taxpayer or tax advisor.

“(d) Rule of Construction.—Nothing in this section shall be construed to imply that other business methods are patentable or that other business method patents are valid.

“(e) Effective Date; Applicability.—This section shall take effect on the date of the enactment of this Act [Sept. 16, 2011] and shall apply to any patent application that is pending on, or filed on or after, that date, and to any patent that is issued on or after that date.”

Emergency Relief From Postal Situation Affecting Patent Cases

Relief as to filing date of patent application or patent affected by postal situation beginning on Mar. 18, 1970, and ending on or about Mar. 30, 1970, but patents issued with earlier filing dates not effective as prior art under subsec. (e) of this section as of such earlier filing dates, see section 1(a) ofPub. L. 92–34, formerly set out in a note under section
111 of this title.

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